[Federal Register Volume 75, Number 122 (Friday, June 25, 2010)]
[Notices]
[Pages 36357-36358]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2010-15468]



[[Page 36357]]

-----------------------------------------------------------------------

DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2010-0049]


Clarification on the Procedure for Seeking Review of a Finding of 
a Substantial New Question of Patentability in Ex Parte Reexamination 
Proceedings

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice.

-----------------------------------------------------------------------

SUMMARY: The United States Patent and Trademark Office (USPTO) is 
clarifying the procedure for seeking review of a determination that a 
substantial new question of patentability (SNQ) has been raised in an 
ex parte reexamination proceeding. This notice clarifies that while 
issues related to a SNQ determination are procedural, the Chief Judge 
of the Board of Patent Appeals and Interferences (BPAI) has been 
delegated the authority to review issues related to the examiner's 
determination that a reference raises a SNQ in an ex parte 
reexamination proceeding. The Chief Judge of the BPAI may further 
delegate that authority to the panel of Administrative Patent Judges 
who are deciding the appeal in an ex parte reexamination proceeding. 
This clarification of procedure will facilitate more efficient 
resolution of SNQ issues.

DATES: Effective Date: June 25, 2010. The procedure set forth in this 
notice applies to ex parte reexamination proceedings in which an appeal 
to the BPAI is decided on or after June 25, 2010. The procedure set 
forth in this notice does not apply to inter partes reexamination 
proceedings.

FOR FURTHER INFORMATION CONTACT: James T. Moore, Vice Chief 
Administrative Patent Judge, Board of Patent Appeals and Interferences, 
by telephone at (571) 272-9797 or by electronic mail at 
[email protected].

SUPPLEMENTARY INFORMATION: The USPTO will order a reexamination of a 
patent only if it determines that a SNQ affecting a claim of the patent 
has been raised. See 35 U.S.C. 304. A determination by the USPTO that 
no SNQ has been raised is ``final and nonappealable.'' See 35 U.S.C. 
303(c). However, a determination by the USPTO that a reference raises a 
SNQ is not subject to judicial review until a final agency decision has 
been entered in the ex parte reexamination proceeding. See Heinl v. 
Godici, 143 F. Supp. 2d 593, 597 n.9 (E.D. Va. 2001) (``The decision to 
grant reexamination of a patent only begins an administrative process 
and, as such, is * * * not [a] final agency action subject to judicial 
review * * * .''); see also Patlex Corp. v. Quigg, 680 F. Supp. 33, 36 
(D.D.C. 1988) (``[T]he legislative scheme leaves the [Director's 35 
U.S.C.] section 303 determination entirely to his discretion and not 
subject to judicial review.''). The USPTO is clarifying that the 
Director of the USPTO has delegated to the Chief Judge of the BPAI the 
authority to review issues related to the examiner's determination that 
a reference raises a SNQ in an ex parte reexamination proceeding. The 
Chief Judge of the BPAI may further delegate this SNQ review authority 
to the panel of Administrative Patent Judges who are deciding the 
appeal in the ex parte reexamination proceeding.

Request for Reconsideration of Examiner's Finding of Substantial New 
Question

    A patent owner challenging the correctness of the decision to grant 
an order for ex parte reexamination on the basis that there is no SNQ 
may request reconsideration of the examiner's SNQ determination.\1\ The 
patent owner may present this challenge prior to the issuance of an 
Office action in the ex parte reexamination proceeding by filing a 
statement under 37 CFR 1.530 discussing the SNQ raised in the 
reexamination order for the examiner's consideration. See 35 U.S.C. 
304. When the examiner makes a rejection based in whole or in part on a 
reference (patent or printed publication) in an Office action, the 
patent owner may present a challenge to the examiner's SNQ 
determination by requesting reconsideration of the examiner's 
determination that the reference raises a SNQ and presenting 
appropriate arguments in the response to the Office action. See 37 CFR 
1.111(b) (the patent owner's reply to an Office action must point out 
the supposed errors in the examiner's action and must reply to every 
ground of objection and rejection in the Office action). By presenting 
arguments regarding the SNQ to the examiner in the early stages of the 
proceeding, the patent owner helps the USPTO to resolve the issues 
quickly. For example, if the patent owner timely files a statement or 
reply, and the examiner agrees with the patent owner that no SNQ has 
been raised in the ex parte reexamination proceeding, then the 
proceeding will be terminated or the reexamination order will be 
vacated (if appropriate). However, if the examiner determines that the 
SNQ is proper, further review can be obtained by exhausting the patent 
owner's rights through the reexamination proceeding and ultimately 
seeking review before the BPAI along with an appeal of any rejections.
---------------------------------------------------------------------------

    \1\ Separate from the BPAI's consideration of the SNQ issue, a 
patent owner may file a petition under 37 CFR 1.181(a)(3) to vacate 
an ex parte reexamination order as ``ultra vires.'' Such petitions 
will be granted only in the extremely rare situation where the USPTO 
acted in ``brazen defiance'' of its statutory authorization in 
granting the order for ex parte reexamination. See Heinl, 143 F. 
Supp. 2d at 601-02. These types of petitions to vacate an ex parte 
reexamination order are not decided by the BPAI, but continue to be 
delegated to the Commissioner for Patents and are currently decided 
by the Director of Central Reexamination Unit (CRU).
---------------------------------------------------------------------------

BPAI Review of Examiner's Finding of Substantial New Question

    The patent owner may seek review on the examiner's SNQ 
determination before the BPAI along with any appeal of the examiner's 
rejections. A patent owner must include the SNQ issue and the 
appropriate arguments in its appeal brief to the BPAI.
    In order to preserve the right to have the BPAI review of the SNQ 
issue, a patent owner must first request reconsideration of the SNQ 
issue by the examiner. Accordingly, for ex parte reexamination 
proceedings ordered on or after June 25, 2010, the patent owner may 
seek a final agency decision from the BPAI on the SNQ issue only if the 
patent owner first requests reconsideration before the examiner (e.g., 
in a patent owner's statement under 37 CFR 1.530 or in a patent owner's 
response under 37 CFR 1.111) and then seeks review of the examiner's 
SNQ determination before the BPAI. In its appeal brief, the patent 
owner is encouraged to clearly present the issue and arguments 
regarding the examiner's SNQ determination under a separate heading and 
identify the communication in which the patent owner first requested 
reconsideration before the examiner.
    The USPTO recognizes that, without the benefit of the clarification 
in this notice, some patent owners who wish to seek a final agency 
decision on the determination of a SNQ may have failed to request 
reconsideration from the examiner. Thus, for ex parte reexamination 
proceedings ordered prior to June 25, 2010, if the patent owner 
presents the SNQ issue in its appeal brief, the BPAI panel will review 
the procedural SNQ issue along with its review of any rejections in an 
appeal and will enter a final agency decision accordingly.
    The final decision by the BPAI panel in an ex parte reexamination 
proceeding

[[Page 36358]]

may include: (1) Its review of the procedural SNQ issue in a separate 
section, and (2) its review of the merits of the rejections. See, e.g., 
In re Searles, 422 F.2d 431, 434-35 (C.C.P.A. 1970) (holding certain 
procedural matters that are ``determinative of the rejection'' are 
properly appealable to the Board); see also In re Hengehold, 440 F.2d 
1395, 1404 (C.C.P.A. 1971) (``[T]he kind of adverse decisions of 
examiners which are reviewable by the board must be those which relate, 
at least indirectly, to matters involving the rejection of the 
claims.''); cf. 37 CFR 41.121 (providing both ``substantive'' motions 
and ``miscellaneous''--i.e., procedural--motions, which may be decided 
together in a single decision).
    The patent owner may file a single request for rehearing under 37 
CFR 41.52 for both the decision on the SNQ issue and the merits 
decision on the examiner's rejections, resulting in a single final 
decision for purposes of judicial review. Judicial review of the BPAI's 
final decision issued pursuant to 35 U.S.C. 134, which will incorporate 
the decision on the finding of a SNQ, is directly to the United States 
Court of Appeals for the Federal Circuit under 35 U.S.C. 141. See In re 
Hiniker Co., 150 F.3d 1362, 1367 (Fed. Cir. 1998) (``With direct review 
by this court of the Board's reexamination decisions, a patentee can be 
certain that it cannot be subjected to harassing duplicative 
examination.''); see also Heinl, 143 F. Supp. 2d at 597-98.
    Although this is an important issue, an appeal containing a request 
for reconsideration of the examiner's SNQ determination is not 
widespread. There were three ex parte reexamination appeals docketed in 
Fiscal Year 2008, only one in Fiscal Year 2009 and one so far this 
year.
    The procedure set forth in this notice does not apply to inter 
partes reexamination proceedings. A determination by the USPTO in an 
inter partes reexamination either that no SNQ has been raised or that a 
reference raises a SNQ is final and non-appealable. See 35 U.S.C. 
312(c).
    Appropriate sections of the MPEP will be revised in accordance with 
this notice in due course.

    Dated: June 18, 2010.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2010-15468 Filed 6-24-10; 8:45 am]
BILLING CODE 3510-16-P